14 dicembre 2007

The scope of protection of weak (descriptive) marks has always been somewhat of a mystery. How much can they be protected? Is it true that minimal differences may exclude the likelihood of confusion?

The ECJ in its Quantum/Quantiemme decision (case C-171/06 of march 17, 2007) disagreed with the idea that a weak distinctive character has overriding importance in determining likelihood of confusion: “[Such approach] would have the effect of disregarding the factor of the similarity of the marks in favour of that based on the distinctive character of the earlier national mark, which would then be given undue importance. The result would be that where the earlier national mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the signs in question”. Thus, is it a given that when there is a complete reproduction of a descriptive term there should not be any doubt about the existence of a likelihood of confusion? Or is it possible that if the descriptive character reaches a certain threshold the descriptiveness has an overriding importance?

The CFI in its decision on case T‑242/06, Miguel Cabrera Sánchez v. OHIM, decided on Dec. 13, 2007, found itself to rule precisely on the hypothetical described by the ECJ: what is the scope of protection of a descriptive (borderline generic) mark which is completely reproduced by a later mark? The marks at issue were the two in the pictures.

The earlier (Spanish) El Charcutero (i.e. the butcher)and the later CTM application for El Charcutero Artisano, both for class 29 (meat and the likes) goods.

Mr. Sanchez, feeling robbed by the whole reproduction of his mark El Charcutero, duly opposed the CTM and lost. He appealed and lost again. So he went to the CFI. And lost again, even though, it was quite a task for the CFI to come up with a reasonably reasoned decision.

The CFI found that, contrary to the belief of Mr. Sanchez, the earlier mark was a composite mark where the words EL CHARCUTERO coexisted with the representation of a (rather ominous) guy sharpening knives. Thus, the CFI proceeded to analyze the marks at issue and found that visually the two marks were dissimilar and even though the word ARTESANO for the consumer of reference (Spanish) did not really add much of distinctive character, in light of the conceptual descriptiveness of the term CHARCUTERO, the average consumer would consider such word enough of an addition to distinguish the CTM from the earlier mark because “it would evoke something which is traditionally manufactured and of superior quality” (at §76).

The decision is, in my view, fair and correct. The issue is, in my view, of course, that the earlier Spanish trademark should have never been granted in the first place and/or should have been conditioned on the placement of a disclaimer for the word CHARCUTERO. Even though the CFI could not say it, it seems obvious to me that the term EL CHARCUTERO, per se and with regard to meat and similar goods, was not a sign capable of having any distinctive character. Disclaimers are not a popular item in Europe, but (like I used to say to someone dear to me who found them utterly boring) they are quite important and can really play an ever increasing role in today’s trademark law and practice. In a case like the one we have just seen, if the Spanish trademark Office had requested Mr. Sanchez to place a disclaimer on the word “CHARCUTERO” perhaps Mr. Sanchez would have not believed to own rights over this word and perhaps the CFI would have not needed 93 paragraphs to decide a case which did not need to be started in the first place….